Ex Parte Ishikawa et alDownload PDFPatent Trial and Appeal BoardFeb 6, 201711046658 (P.T.A.B. Feb. 6, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/046,658 01/28/2005 Muriel Y. Ishikawa 1003-002-002J-000000 9978 44765 7590 02/08/2017 INTELLECTUAL VENTURES - ISF ATTN: DOCKETING, ISF 3150- 139th Ave SE Bldg. 4 Bellevue, WA 98005 EXAMINER WHALEY, PABLO S ART UNIT PAPER NUMBER 1631 NOTIFICATION DATE DELIVERY MODE 02/08/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ISFDocketInbox@intven.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MURIEL Y. ISHIKAWA, EDWARD K.Y. JUNG, NATHAN P. MYHRVOLD, RICHA WILSON, and LOWELL L. WOOD, JR. Appeal 2012-008962 Application 11/046,658 Technology Center 1600 Before LORA M. GREEN, ALLEN R. MacDONALD, and JACQUELINE T. HARLOW, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a decision on Appellants’ Request for Rehearing. Appellants’ Request for Rehearing, filed under § 41.52, requests that we reconsider our Decision of August 11, 2016, wherein we entered a new ground of rejection of claims 56 and 66—72 under 35 U.S.C. § 112, second paragraph, for indefiniteness. We have reconsidered the new grounds of rejection made in our Decision in light of Appellants’ comments in the request, but Appellants’ arguments do not convince us that we erred in rejecting the claims under 35 U.S.C. § 112, second paragraph, for indefmiteness. We, therefore, decline to change the Decision. Appellants’ Request for Rehearing is denied. Appeal 2012-008962 Application 11/046,658 Appellants contend that, as to claims 56 and 66—72, the Board erred because “[t]he Board Opinion failed to correctly apply the legal standard of a rebuttable presumption against the claims being subject to 35 U.S.C. § 112, sixth paragraph, including failing to correctly consider the claim recitations as relevant to the analysis.” Reh’g Req. 5. Specifically, Appellants argue that No reasoning or explanation was presented as to why the claim terms would be interpreted by one of ordinary skill in the art as invoking 35 U.S.C. § 112, sixth paragraph. Instead, the Board Opinion focused on a “computer-implemented claim limitation” . . . without analysis of the actual claim terms . . . [and, thus,] focuses on the Specification in a flawed analysis of a “computer- implemented claim limitation”. . . which is unsupported by the actual claim language. Id. We disagree. Contrary to Appellants’ argument, our original Decision correctly set forth and applied the proper standard of rebuttable presumption regarding whether claims 56 and 66—72 should be subject to 35 U.S.C. §112, sixth paragraph. Specifically, our Decision outlined the Federal Circuit’s initial focus on whether the word “means” appears in the claim — “use of the word ‘means’ creates a rebuttable presumption that the inventor intended to invoke § 112, sixth paragraph, whereas failure to use the word ‘means’ creates a rebuttable presumption that the inventor did not intend the claims to be governed by § 112, sixth paragraph.” Decision 21—22, citing Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703—704 (Fed. Cir. 1998). We then cited relevant Federal Circuit precedent which indicates that the presumption against invoking § 112, sixth paragraph will be overcome if the “claim term fails to ‘recite [] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for 2 Appeal 2012-008962 Application 11/046,658 performing that function.’” Decision 22, citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Contrary to Appellants’ argument, our Decision focused on the actual claim terms at issue, expressly noting that because the “circuitry for . . .” limitations do not recite the term “means,” a rebuttable presumption exists “that the inventor did not intend [those] claim limitation[s] to be governed by § 112, sixth paragraph.” Decision 23. We then stated that “the presumption against invoking § 112, sixth paragraph has been overcome, and thus § 112, sixth paragraph does apply, because the claimed circuitry limitations recite specific functions without reciting sufficient structure for performing those functions.” Id. at 24. The “Analysis” portion of our Decision refers to the claimed circuitry multiple times (Decision 23—25), and to the extent that our Decision addresses the Specification, we remind Appellants that “the specification is always highly relevant to the claim construction analysis [and] [u]sually, it is dispositive.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). As stated in our Decision, according to Appellants’ Specification, the claimed circuitry “can be virtually any combination of hardware, software, and/or firmware configured to effect the” claimed functions (Decision 14; FF14), and can include “electrical circuitry forming a general-purpose computing device configured by a computer program.'1' (Decision 16; FF16). Thus, in view of Appellants’ Specification, the claimed circuitry is by its very nature a computer-implemented claim limitation, and any discussion in our Decision regarding a computer-implemented claim 3 Appeal 2012-008962 Application 11/046,658 limitation inherently includes the claimed circuitry as it is defined by Appellants. Accordingly, Appellants’ contention that our Decision did not analyze the actual claim term “circuitry” is without persuasive merit. Appellants contend further that The recitations of Appellants’] claims discussed in the Board Opinion are “circuitry for ...” [and it] is these words as they would be interpreted by one of ordinary skill in the art that are subject to the presumption against being subject to 35 U.S.C. § 112, sixth paragraph. The Board Decision provides no reasoning or evidence that the words “circuitry for” would be interpreted by one of ordinary skill in the art as a “non-structural term having no specific structural meaning” (see MPEP §2181(1), as above). Appellants] assert[] that one of ordinary skill in the art would understand “circuitry for” as a known structure, that of the physical structure of circuits. Reh’g Req. 6. Appellants support their contention by suggesting that MPEP § 2181 and Federal Circuit precedent requires the claimed “circuitry for” limitations to be interpreted as “a physical structure,” and, thus, the Board erred in considering the term “circuitry” to be a generic placeholder or “nonce” term. Id. at 6—7. Appellants specifically rely on two Federal Circuit decisions — Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364 (Fed. Cir. 2003), and Linear Technology Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004). We are not persuaded, however, that these cases or the MPEP necessarily require such a result in the instant case based on a mere recitation of the term “circuitry” in the newly rejected claims. First, we note that, according to MPEP § 2181 relied upon by Appellants, “[i]t is important to remember that there are no absolutes in the determination of terms used as 4 Appeal 2012-008962 Application 11/046,658 a substitute for ‘means’ that serve as generic placeholders. . . . Every application will turn on its own facts.” Further, we note that in Apex, the Federal Circuit declined “to hold that the term ‘circuit’ by itself always connotes sufficient structure” to the ordinary skilled artisan “to perform the functions identified by each limitation.” Apex, 325 F.3d at 1373. Rather, the Federal Circuit held that “the term ‘circuit’ with an appropriate identifier such as ‘interface,’ ‘programming’ and ‘logic,’ certainly identifies some structural meaning to one of ordinary skill in the art.” Id. (emphasis added). Further, even as recognized by Appellants on page 7 of their Request, the Court indicated that, based on a definition of “circuit” found in the Dictionary of Computing, “it is clear that the term ‘circuit,’ by itself connotes some structure.” Id. (emphasis added). We remind Appellants, however, that the standard for successfully rebutting the presumption that § 112, sixth paragraph does not apply when the term “means” is not present is not whether the claim term recites “some” structure. Rather, the critical inquiry is whether the claim term recites sufficient structure for performing the claimed function. See Williamson, 792 F.3d at 1349. In Apex, “every use of the term [circuit] includes additional adjectival qualifications further identifying sufficient structure to perform the claimed functions to one of ordinary skill in the art.” Apex, 325 F.3d at 1374 (emphasis added). For example, the Court in Apex points to the identifiers that were associated with the term “circuit” — “interface,” “programming” and “logic” — which, in that case, further identified sufficient structure to perform the claimed functions. 5 Appeal 2012-008962 Application 11/046,658 Here, we have no such additional adjectival identifiers. Rather, in considering the claim limitations as a whole, the claims at issue merely claim “circuitry for” carrying out some function, without sufficient additional information contained in the Specification or the claim language itself that would reasonably inform the ordinary skilled artisan what structure is required to carry out the claimed functions. For example, claim 56 recites, inter alia, “circuitry for predicting at least one pattern change as determined by analysis of past variations in the one or more computable epitopes; [and] circuitry for associating the at least one pattern change in the one or more computable epitopes with at least one timeline of therapy change.” Neither the Specification nor the claim language itself, however, provides any explanation or algorithm that details precisely what structure is required for the “circuitry” to accomplish those claimed functions. Thus, although “the term ‘circuit’ by itself connotes some structure” as observed by the Court in Apex, the term “circuitry” in the present case does not provide sufficient structure to perform the numerous functions recited in the claims. The present case is likewise distinguishable over the Federal Circuit’s decision in Linear where the Court held that “when the structure-connoting term ‘circuit’ is coupled with a description of the circuit’s operation, sufficient structural meaning generally will be conveyed. . . and § 112 | 6 presumptively will not apply.” Linear, 379 F.3d at 1320. In Linear, the Court focused on the claim language at issue, noting that: Claim 1 recites: “a first circuit for monitoring a signal from the output terminal to generate a first feedback signal.” [Wherein] [t]he contextual language describes the objective of the “circuit,” “monitoring a signal from the output terminal,” and the desired 6 Appeal 2012-008962 Application 11/046,658 output of the “circuit,” “generating] a first feedback signal.” The “second circuit” and “third circuit” limitations in claim 1 are accompanied by similar language reciting their respective objectives and operations. . . . That persons of ordinary skill in the art would understand the structural arrangements of circuit components from the term “circuit” coupled with the qualifying language of claim 1 was recognized by Linear’s expert witness [who testified] that a person of ordinary skill in the art reading the claims “would have an understanding of, and would be able to draw, structural arrangements of the circuit elements defined by the claims.” Id. (emphasis added). Unlike in Linear, Claim 56 of the present case contains no contextual language that describes the objective or the desired output of the circuit that would provide a person of ordinary skill in the art reading the claims with an understanding of the structural arrangements of the circuit elements necessary to carry out the claimed functions. Also, as noted in our Decision, the Specification is likewise silent as to “how the claimed circuitry, which could be part of a general purpose computer, is actually capable of performing the claimed functions.” Decision 24. Thus, Appellants reliance on the Apex and Linear Federal Circuit does not convince us that the recitation of the term “circuitry” in the present case necessarily connotes sufficient structure for performing the claimed function. Therefore, we determine that our Decision correctly applied the appropriate legal standard of rebuttable presumption according to relevant Federal Circuit case law and is not inconsistent with the guidance provided in MPEP §2181. 7 Appeal 2012-008962 Application 11/046,658 DECISION In view of the foregoing discussion, we grant Appellants’ Request for Rehearing to the extent of reconsidering our decision in view of Appellants’ arguments made in the Request, but we decline to modify the new grounds of rejection as set forth in our Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v). REQUEST FOR REHEARING DENIED 8 Copy with citationCopy as parenthetical citation